TEMPLE PUMP CO. v. GOSS PUMP & RUBBER BUCKET MANUF'G CO., 58 F. 196

WOODS, Circuit Judge, (after making the foregoing statement.) However construed, it is not clear that the patent in suit is for an invention. - The thickened lower end of the bucket is its only novel feature, and from that there results no new function, and no advantage which had not Tbeen attempted, and in some useful measure accomplished, in the prior art.

The angle or recess, a', and the inward incline, a, are mere results of adding the thickened lower end to the Goss bucket of 1884, and in view of that, and of the earlier devices in evidence, it is difficult to see that in adding this thickened extension to the bucket there was employed more than ordinary skill and judgment in adapting means to an end. It is not pretended that the characteristics of rubber which -are thereby brought into play — its powers of compression, expansion, and contraction — were not already well understood.

Besides the use already made of it in rubber buckets for chain pumps by Goss himself and by Temple, Churchill, Miller, and others, its employment in various arts and manufactures had made its qualities well known, and left but little room for invention merely in devising and adapting new forms to old uses.

Witnesses and counsel have not omitted to point out with elaborate precision the various particulars in which the earlier buckets differ one from another, and from the one in suit, — as, for example, the obvious fact that Churchill and Temple both sharpen the lower edge of the rubber, one from the inside and the other from the outside; but such differences can hardly he within the domain of invention, and it is not perceived how the consideration of them can bring much aid to the solution of the question whether or not, after what had already been done by himself and others, Goss, by producing his bucket of thickened lower end and reversed inclines, wrought out a patentable discovery.

That question does not depend upon merely accidental differences which, by appropriating the devices, or by following the plain suggestions of the prior art, could easily he made to disappear.

The proof shows that the bucket of Goss’s first patent was of better form, and operated more successfully, than any of those which preceded it, and yet he claimed nothing for the rubber alone, but only a combination of the rubber and nut and link as set forth; and if there was invention in merely extending and thickening the lower end of that bucket, as claimed in the second patent, for the purpose of admitting, locking, and protecting the nut and forming the recess and reversed inclines, so that the bucket could be expanded both by the upward and downward movement of the nut from its place in the recess, it was certainly not a pioneer discovery, which would justify extending the patent by a liberal construction of the claim to include different forms or designs, though they be capable of performing similar functions, and even of being forced by manipulation of the nut into the form which the patented device has when not itself distorted by a nut of enlarged diameter.

It is contended, however, that besides being first to devise a bucket which could be expanded by a downward movement of an expanding nut, Goss was absolutely the first to effect the expansion without compressing or squeezing the rubber; because, it is said, the buckets patented by Churchill and Temple in 1883 and by Goss in 1884 are expanded “by compressing the rubber against a fixed or nonmovable top projection or flange on the link, operating to oppose the upward movement of the nut and to expand the rubber by squeezing it out.” The proposition is not necessarily true of the patents named, and in respect to the Miller device; of 1882 seems to be essentially untrue.

In any of the devices, if the nut is moved within the cavity wiihout first turning the rubber baulc or somehow forcing it out of the way, the tendency will he, as the nut advances on the link, to compress the rubber in front, producing in that direction an expansion by “squeezing,” while behind the nut there will be a tendency to pull the rubber loose from its attachment on the link, or, if the rubber be free at, that end, it will tend to contract behind the nut. ,l>ut manifestly it is not necessary nor desirable in any of the devices that changes in the position of the nut should he effected solely by pushing if against the thickened rubber in front, although in the form shown iri Churchill’s drawings probably it would be done mainly in that way.

Yet in that form possibly, and certainly in some of the forms shown in the first patents of Temple and Goss, it would he practicable without alteration of parts or structure, by a, manipulation which would not be difficult, to put the nut at the top of the bucket’s cavity in the first instance, and, the diameter of the nut being greater than the diameter of the cavity, it would make an impression in the wall of rubber similar to the recess, a' of the patent, and from that point, by repeating the manipulation, it could be moved downward whenever necessary to provide new wearing surface between the bucket and the well tube; the resulting compression and expansion being produced, not by the movement of the nut, but by force of (he nut in place after the completion of each movement.

And in the Miller bucket of 1882 the same results could be accomplished without the necessity of forcing or maniiralaling the rubber into shapes and modes of operation like those of the patent in suit; because it is to begin with a bucket with the thickened lower edge, which needs only the-substitution of a nut for the rubber cone by which it is expanded to make it essentially the same as the bucket manufactured by the appellant. Of course, such a substitution, in view of the existing state of the art, could not be in; vention.

It is pronounced impossible, because, it is said, the effect of a nut in that bucket would be to expand the upper ‘part of the rubber, and loosen it on the link; while it is essential to the complainant’s bucket that it be thickened both at the top and bottom, and that the Miller bucket is not of that form.

The objection is one of those which do not touch the question of invention, because the upper part of the "bucket, if too light or weak, could easily be strengthened enough to overcome a tendency to loosen, and, that once done, the combined action of the nut and rubber would be the same as in the bucket of the appellant, which is alleged to be identical with that of the appellee. It is, of course, true that a mistaken description, or even misconception, of the operation of a device which is itself fitly described. and claimed, does not vitiate a patent; because, as is said in Western Electric Co. v.

Sperry Electric Co., 58 Fed. Rep. 186, the patent is upon the device, and not upon the functions,-real or supposed. But it is equally true, we suppose, that when a device designed merely for the improvement of a well-advanced art is described as having particular features of construction which are adapted to accomplish specific results or modes of operation, and the claim of the patent is for that device, the features so described are covered by the claim, and may not be rejected, or treated as of secondary importance, in order to extend the patent over other forms or features not described.

The claim has been treated in argument as if it read, “A rubber bucket, having its largest diameter,” etc., and, if it were so, it might perhaps be construed broadly enough to cover “a rubber bucket thickened at its lower end to form the inward incline, a',” or a bucket with a single incline; but being, as it is, for “the rubber bucket, A,” etc., it can be fairly interpreted only as meaning the particular bucket described in the specification, having a cavity with reversed inclines sloping gradually upward and downward from the angle or recess, a', at which, when in use, the nut is to be first placed, and so constructed as to admit of expansion, which shall present new wearing surfaces as needed, first by turning or adjusting the nut gradually in the upward direction, and then (after returning the nut to the recess) by repeating the process in the downward direction.

Much of the specification, while explanatory of intended functions, is at the same time descriptive of the device, and there is no reason for doubting that the patentee understood and intended his bucket to be one of two inclines, and capable of effective expansion by alternate upward and downward movements of the nut. It is clear énough, too, that the nut was not designed to be larger than the recess into which it was to go, because the proposed expansion is described as being caused, not by the insertion of the nut, but by moving the nut first upward and then downward from the recess.

It was, of course, the right of the appellee, making the rubber smaller if necessary, to enlarge the nut, and also to locate the recess or largest inner diameter at the top of the cavity; but the patent did not, on that account, become different.

Seeming to think his patent as pliable as the rubber of his bucket/ the appellee has presented two linea of argument and proof which are at once inconsistent and fallacious: First, as just stated, it has made its own buckets upon a. model essentially different from the form patented, and because the appellant has made buckets of similar form the patent has been infringed; and, second, it is manifestly true, as the proof shows, that in the appellant’s bucket with either straight or flaring cavity, a ñut of the kind used, which is larger than the largest part of the cavity, will produce, when placed intermediate between top and bottom, two inclines like those shown in the Goss patent, and therefore the former is an infringement of the latter.

How the same treatment would produce like effects in some of the older buckets, and make of them anticipations of the patent in suit, has already been pointed out. The conclusion to which these considerations lead is materially strengthened by the history of Goss’s application for his second patent, wherein it appears that he presented, and, after they were rejected, abandoned, claims so worded as to have the same meaning which it has been sought to put by construction upon the claim finally presented and allowed.

It is insisted that the claim granted is broader than those rejected, and therefore cannot he limited by them; but that is a begging of the question. It can he made broader only by construction, and the effect of the decisions on the subject, as we understand them, is that a claim cannot by construction be enlarged to include the matter of claims in the rejection of which the patentee had acquiesced.

Our conclusion is that, conceding, without deciding, that the patent in suit has in it some measure of invention, it must be limited to the form of bucket described in the specification, and has o not been infringed by the appellant. The decree below should therefore be set aside, and The bill dismissed for want of equity, and it is so ordered.